DC Comics v. Towle d/b/a Garage Gotham

In May 2011, DC Comics sued Towle in a California federal district court, alleging, among other things, causes of action for copyright infringement, trademark infringement, and unfair competition arising from Towle’s manufacture and sale of the Batmobile replicas. The district court held that the Batmobile was a “character” entitled to copyright protection and that DC Comics maintained a copyright in the Batmobile as it appeared in both the 1966 TV show and the 1989 movie, based on its ownership of the merchandising rights. The district court also concluded that Towle’s replicas infringed upon DC Comics’ copyright. Accordingly, the district court granted DC Comics summary judgment on the copyright infringement claim. The district court also granted summary judgment to DC Comics on Towle’s affirmative laches defense to the trademark infringement claim, finding that the infringement was willful. (Read our summary of the district court decision here.)

On appeal, the Ninth Circuit cited cases including Halicki Films, LLC v. Sanderson Sales & Mktg. and Walt Disney Productions v. Air Pirates as establishing a three-part test for determining whether a character in a comic book, TV program or movie is entitled to copyright protection. First, the character must generally have “physical as well as conceptual qualities.” Second, the character must be “sufficiently delineated” to be recognizable as the same character whenever it appears. Third, the character must be “especially distinctive” and “contain some unique elements of expression.” Even when a character lacks sentient attributes and does not speak (such as a car), it can be a protectable character if it meets this standard.

The Ninth Circuit examined each of these factors in turn. It first concluded that the Batmobile was a copyrightable character because it had distinctive physical and conceptual qualities. Citing Air Pirates, the Ninth Circuit noted that the Batmobile has appeared graphically in comic books and as a three-dimensional car in television series and motion pictures. It also noted that the Batmobile has “physical as well as conceptual qualities,” and is thus not a mere literary character.

Second, the Batmobile’s character traits and attributes also remained consistent and identifiable even when its specific physical appearance changed. The Batmobile is “sufficiently delineated” to be recognizable as the same character whenever it appears. As the lower court determined and the Ninth Circuit agreed, “the Batmobile has maintained distinct physical and conceptual qualities since its first appearance in the comic books in 1941.” Finally, the court found that the Batmobile had “unique elements of expression and a highly recognizable name,” and was not “merely a stock character.”

The Ninth Circuit rejected Towle’s argument that the three-part test is not met because the Batmobile has at times appeared without its signature “bat-like” features. It held that a consistent appearance is not as significant in the analysis as consistent character traits and attributes, and that changes can be likened to costume changes. The Ninth Circuit also rejected Towle’s argument that a jury should decide whether the Batmobile displayed unique elements of expression and consistent, widely identifiable traits, pointing out that it has previously held that whether a particular work is subject to copyright protection is a mixed question of fact and law subject to de novo review, and that neither party disputes the relevant facts regarding the Batmobile.

Further, the Ninth Circuit then found that, as the initial owner of the Batmobile character, DC Comics had a copyright interest in the derivative TV and movie productions under 17 U.S.C.S. § 201(a), and could file a copyright infringement suit against a seller of unauthorized replica cars copying the TV and movie vehicles. As a copyrightable character, the Batmobile need not have a consistent appearance in every context, so long as the character has distinctive character traits and attributes, said the Ninth Circuit.

The Ninth Circuit also affirmed the district court’s holding that Towle could not assert a laches defense because the trademark infringement was willful. Here, the undisputed facts establish that Towle used DC Comics’ Batman trademarks in order to exploit the advantage of those marks. “Towle’s advertisements recognize that the Batmobile is a famous vehicle, and boast that crowds will form around his replicas as a result of the Batmobile’s fame,” it noted. Towle also admitted most of his customers were fans who “usually know the entire history of the Batmobile.”